Introduction

In the recent times, knowledge and creativity have been effectively turned into valuable assets with the help of Intellectual Property Rights (IPR). IPR can be strategically utilized by integrating the Intellectual Property (IP) into the product or marketing efforts, which further enhances competitiveness. IP owners can generate additional revenue by selling their rights, granting permission for others to use them, and forming joint ventures or collaborations with others who have complementary access. This is done by IP licensing and IP assignment, handled effectively by our team of IPR lawyers and attorneys.

What is IPR assignment?

IPR assignment refers to when a person can transfer his/her asset to another individual/person/entity. When the owner transfers all its exclusive rights, i.e., rights to a patented invention, registered trademark, design, or, copyrighted work to another individual/person/entity, it is known as assignment of rights. In simple words, it is essentially the sale of an IP asset, i.e., transferring of ownership of the IP asset to someone else.

What is IP licensing?

IP licensing refers to when an individual/person/entity permits someone else to use their IP while retaining the ownership by granting a license in exchange for a value, such as a lump sum, recurring payments or royalties, or a combination of both. Licensing provides various opportunities to enter new markets, create additional revenue stream through royalties, and form partnerships. If a person owns a patent, know- how, or any other IP asset, and the management of all the commercialization activities, such as technology development, manufacturing, etc., is not possible, they can benefit from licensing their IP by utilizing their partner’s capabilities, expertise, and management skills.

What are the types of Licenses?
Exclusive License refers to when the licensor grants all his/her rights to the licensee, and excludes everyone else, including the licensor. The licensee through an exclusive license, becomes the sole holder of the property.
Sole License refers to when the licensor grants the right to use the property to the licensee. While doing so, the licensor also retains those rights that are granted. This enables both the licensor and the licensee to exercise rights, but these rights cannot be transferred to a third person.
Non- Exclusive License refers to when the licensor grants the rights to the licensee to use the property but retains the right to license the same rights to third parties.
What are the types of assignments?
Legal assignment refers to that assignment in which all the required conditions of an assignment are met. This further allows the assignee to sue independently. A written notice is crucial and important for establishing priority.
Equitable assignment refers to that assignment which is based on trust and does not require any written notice. The assignee’s title is recognized and protected in equity. This type of assignment occurs when the assignment does not meet the criteria for a legal assignment. The equitable assignee must sue for their rights together with the assignor, with priority being a key distinction.
Mortgages are those types of assignment which are significant in IP financing, enabling companies to secure loans by mortgaging their intellectual property assets. IP mortgages allow companies to obtain credit facilities from banks, often amounting to millions.
What is the difference between a license and an assignment?

Assignment	License
1. It involves transferring of ownership of the IP title.	1. It refers to when only specific rights are transferred.
2. It transfers all rights substantially.	2. It relinquishes only certain rights.
3. The payment made for an assignment is usually a one- time fixed amount.	3. It often involves payments that are recurring or are royalties.
4. They are always exclusive. They do not retain any rights with the assignor.	4. On the other hand, they can either be exclusive or non- exclusive.
5. The assignor cannot set conditions for further use or transfer once the rights have been assigned.	5. Whereas, a licensor can impose restrictions on use, transfer, period, utility, etc.
6. The assignor cannot interfere with the exploitation of the rights once they have been assigned.	6. The licensor can take a legal action against any third- party infringement.
7. An assignee can take a legal action in its own name.	7. Whereas, in case of a license agreement, only the licensor can take a legal action against third- party infringement.
8. No rights remain with the original holder.	8. Some rights remain with the original holder.
9. Assignments must be in written as they are permanent in nature.	9. Whereas, licenses can be oral.
10. Assignments being permanent in nature, require upfront payment and cannot be reversed.	10. Licenses can be revoked at any time and offer long- term payments.

What are the statutory provisions for licensing and assignment in various intellectual property laws?

Act	Licensing Provisions	Assignment Provisions
Copyright Act	Sections 30-32: licensor can grant copyright in existing or future work to the licensee. It must be inwriting and should be signed. Licensee’s legal heir is entitled, if the licensee dies before future works comes into existence. Types of licensing- compulsory and voluntary.	Section 18 and 19: the owner can assign existing or future work. Assignment can be partial or whole, subject to limitations. The assignment of a future work is effective from the date of its creation. The assignee gets complete rights and can sue. In case the assignee dies before the existence of the future work, the legal heirs of the assignee will be entitled.
Trade Marks Act	Sections 29 and 140: the use is like that of a proprietor of a registered mark. Section 48 permits other users to be registered as a registered user of the trademark, which means transfer of rights either through licensing or assignment.	Chapter V: talks about assignments and transmissions. Section 37 states that a registered proprietor can assign trademark. Section 49 defines the procedure for assignment. Trademark rights are transferable with or without goodwill.
Geographical Indications	Not applicable as GIs are public property and rights cannot be transferred through licensing.	Not applicable as GIs are public property and rights cannot be transferred through assignment.
Designs Act	Permits licensing of design by the registered proprietor.	Section 30: specifically states about assignments and transmissions.
Patents Act	Section 70: grants power to the proprietor to assign, grant license to other individuals.	Section 68 and 69: states the procedure and time form which assignment or transmission of rights shall be effective.

What is Compulsory licensing?

It is a system in which a government allows a company to produce a patented product or utilize a patented process without the consent of the owner of the patent.

How can one license an invention?

Licensing involves acquiring the rights to intellectual property (the invention) for the purpose of production and marketing, typically on commercial terms. The inventor who licenses their invention is compensated through a fee, which can be a one-time lump sum or a percentage of the generated revenue, referred to as royalty. The Licensing Agreement thus enables the invention to become a marketable product. The licensing process varies across organizations but generally includes negotiations between the licensor and licensee teams. Important parameters in licensing agreements include:

– License exclusivity

– Upfront lump sum payment

– Royalty payment rate and method

– Geographical territory covered by the agreement

– Liability considerations

Conclusion

Thus, IP rights convert knowledge and creativity into valuable assets for business, enhancing product development and marketing. Owners can leverage these rights through assignments, which transfer full ownership, or licenses, which permit use while retaining ownership. Both methods offer opportunities for market growth, revenue, and partnerships. Understanding the distinctions and legal aspects of IP transactions is crucial for effective asset management and compliance. Thoughtful negotiation and strategic planning can help businesses use IP rights to drive growth and innovation.